Obtaining a trademark registration of a trademark at the United States Patent and Trademark Office is not always an easy task. The USPTO can refuse registration for a number of reasons. Here is a short list of some tips for overcoming one of the hardest and most common refusals: A likelihood of confusion with a prior registration or application.Obtaining a trademark registration of a trademark at the United States Patent and Trademark Office is not always an easy task. The USPTO can refuse registration for a number of reasons. Here is a short list of some tips for overcoming one of the hardest and most common refusals: A likelihood of confusion with a prior registration or application.
1. Argue that the marks or goods are different
Point out each and every difference in appearance, sound, connotation (the meaning related to your mark as a whole, and applied to your goods/services), and commercial impression (a consumer’s instant impression after viewing the marks on the goods). Also, argue that your goods are sufficiently different from the cited mark’s goods that consumers will not expect that one producer made both goods.
2. Consent Agreements – agree to coexist with a prior registrant/applicant
This is the easiest path to overcoming a likelihood of confusion refusal. If you can convince the owner of the other application/registration to sign an agreement (it is ok to pay for their agreement), you have a great shot of getting your mark registered.
Note: Reaching out to the other party could backfire, since it also puts them on notice that you are planning to use a similar mark for a competing product.
3. Argue the prior registration/application is weak
If a term is commonly used, or descriptive of a feature of the goods or services, it is only entitled to a narrow scope of protection. If the only similarity between your mark and the cited mark is a weak term (such as a term that is descriptive, geographic, a surname, or laudatory), you may be able to salvage your application by providing evidence of such weakness. We find this is one of the most effective ways to overcome a likelihood of confusion refusal.
Note: Making this argument also serves to establish on the record that YOUR mark, or the portion of your mark using the term, is weak as well.
4. Collateral attack – a last resort
If all else fails, you may be able to clear the way for your registration by asking that the USPTO cancel the prior registration. The most common grounds for seeking cancellation include abandonment (where the owner of the registration has stopped using the mark), and priority (where you began using a mark before the other application was filed).
Note: If the prior registration is more than 5 years old, there are fewer grounds for challenging the registration.
Note 2: Cancellation proceedings can take years and cost tens of thousands of dollars or more.
For more information about this topic, contact Dan Christopherson.